DECISION

 

Boston Private Financial Holdings, Inc. v. Eric Kuniholm / Beacon Capital Management Advisors

Claim Number: FA1503001611880

 

PARTIES

Complainant is Boston Private Financial Holdings, Inc. (“Complainant”), represented by Robert M. O'Connell of Fish & Richardson P.C., Massachusetts, USA.  Respondent is Eric Kuniholm / Beacon Capital Management Advisors (“Respondent”), represented by Justin Mercer of Lewis & Lin, LLC, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bostonprivatewealth.com> and <bostonprivatewealthmanagement.com>  registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

James Bridgeman as Chair.

G. Gervaise Davis as Panelist.

Douglas M. Isenberg as Panelist

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 27, 2015; the Forum received payment on March 27, 2015.

 

On March 30, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bostonprivatewealth.com> and <bostonprivatewealthmanagement.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bostonprivatewealth.com and postmaster@bostonprivatewealthmanagement.com.  Also on April 1, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on April 21, 2015.

 

A timely Additional Submission was received from Complainant on April 27, 2015.

 

On May 6, 2015 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed James Bridgeman as Chair, G. Gervaise Davis as Panelist, Douglas M. Isenberg as Panelists.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Through its predecessors in interest and subsidiaries Complainant is in the business of providing banking, investment management, financial planning and other financial services to individuals and institutions since 1986.

Complainant is the owner of several United States federal and state trademark registrations and applications, including:

·        U.S. Trademark Registration No. 3,018,909, issued November 29, 2005, for the mark BOSTON PRIVATE BANK & TRUST COMPANY.

·        U.S. Trademark Application No. 86/320,937, filed June 26, 2014 and allowed February 10, 2015, for the mark BOSTON PRIVATE WEALTH MANAGEMENT; and

·        Massachusetts Service Mark Registration No. 60847, issued November 7, 2011, for the mark BOSTON PRIVATE BANK & TRUST COMPANY.

 

Complainant formerly owned U.S. Registration No. 3,383,984, issued February 19, 2008, for the mark BOSTON PRIVATE WEALTH MANAGEMENT GROUP; registration recently lapsed but was valid and subsisting at the time the Domain Names at issue were registered and thus is relevant to the issue of bad faith registration.

 

Complainant  also registered the domain name <bostonprivate.com> on December 12, 1999 and the domain name <bostonprivatebank.com> on June 19, 1998, and has used both domain names in connection with the advertising and offering of its banking, investment management, financial planning, wealth management and other financial products and services.

Complainant also currently operates a stand-alone web site for its wealth management business at <www.bostonprivatewm.com> and <www.bpwealthmanagement.com>, addresses that Complainant  was compelled to use because the subject Domain Names were unavailable.

 

Complainant further claims common law rights in the BOSTON PRIVATE BANK & TRUST COMPANY, BOSTON PRIVATE BANK and BOSTON PRIVATE trademarks which it  has used for its banking, investment management, financial planning and other financial products and services since at least as early as November 1986, and has continuously used these trademarks in United States commerce since that time.

 

Furthermore Complainant  asserts that it has from time to time used the marks BOSTON PRIVATE WEALTH MANAGEMENT GROUP, BOSTON PRIVATE WEALTH MANAGEMENT and (currently) BOSTON PRIVATE WEALTH at various times since 2004.

Complainant established valid common law and statutory rights in its distinctive BOSTON PRIVATE marks long before Respondent registered the <bostonprivatewealth.com> domain name on September 1, 2011 and the <bostonprivatewealthmanagement.com> domain name on August 29, 2011.

 

Complainant submits that the disputed domain names are nearly identical and/or confusingly similar to Complainant’s BOSTON PRIVATE marks, to which COMPLAINANT   has common law and statutory rights. Complainant   argues that each of the disputed domain names incorporate the dominant elements of Complainant ’s BOSTON PRIVATE marks in their entirety, adding only the descriptive term “wealth,” the descriptive phrase “wealth management,” and the gTLD extension “.com.”

Respondent’s addition of the “wealth” or “wealth management” to the disputed domain names does not distinguish the disputed domain names from Complainant’s marks.

 

Complainant submits that Respondent does not have a legitimate interest in the disputed domain names, arguing specifically that: Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the disputed domain names; Respondent has never been known as or referred to as “BOSTON PRIVATE” or any variation thereof; Respondent is not authorized or licensed to use the BOSTON PRIVATE marks; Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services, nor is Respondent making a non-commercial fair use of the disputed domain names.

 

Furthermore Complainant states that Respondent is not even using the disputed domain names: the URLs lead to a GoDaddy parking page. Complainant   argues that it is well established that the passive holding of a domain name is not a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain names under the Paragraph 4(a)(ii) of the Policy. Citing inter alia Bronco Wine Co. v. Midnight Wine Cellars a/k/a Joe Thrift, FA 97740 (Nat. Arb. Forum Aug. 2, 2011) (“The passive holding of a domain name confusingly similar to Complainant  ’s mark is not a bona fide offering of goods under 4(c)(1) nor is it a legitimate noncommercial or fair use under 4(c)(iii).”)

 

Complainant further argues that the disputed domain names were registered and are being used in bad faith.

Complainant submits that Respondent had constructive notice of Complainant’s rights in the BOSTON PRIVATE marks when it registered the disputed domain names. The disputed domain names were registered in 2011, long after Complainant first adopted and first used the BOSTON PRIVATE Marks in 1986.

Furthermore, Complainant submits that Respondent had actual knowledge of Complainant’s rights when the disputed domain names were registered. Respondent cannot credibly claim not to have had actual knowledge of Complainant’s name and reputation at the time the disputed domain names were registered, and currently. Respondent’s organization, Beacon Capital Management Advisors, offers financial services in direct competition with Complainant   (see www.bcmadvisors.com), and its street address is located in the heart of Complainant’s home market, less than a mile away on the same street from one of Complainant  ’s offices (581 Boylston Street vs. 500 Boylston Street).

 

Respondent offered to sell the disputed domain names, as well as other similar domain names for monetary or other compensation (i.e., participation in a joint venture with Complainant). On January 7, 2015, counsel for Complainant sent a demand letter to Respondent. After no response was received, counsel for Complainant sent a follow up letter on January 22, 2015. On February 6, 2015, Respondent directly e-mailed three executives of Complainant   with an offer to sell (at least) one of the Domain Names to Complainant, and other similar domain names such as <privatewealthmanagement.com>. While no exact amount is referenced in the February 6 letter, numerous references are made to other similar domain names which have sold for millions of dollars and Respondent also refers to an offer of “partnership” between the Respondent and Complainant. Such a naked solicitation has consistently been found to be evidence of bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”)

 

Respondent’s complete failure to respond in good faith to Complainant’s demand letters provides further support for a finding of bad faith. See Encyclopedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (failure to respond to Complainant’s letters “provide[s] strong support for a determination of ‘bad faith’ registration and use.”).

 

Bad faith registration and use of the disputed domain names is furthermore evidenced by the fact that Respondent has engaged in a pattern of registering domain names that incorporate Complainant’s marks. Citing Big Dog Holdings, Inc. v. Frank Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding bad faith because “Respondents have a pattern of registering multiple domain names which are the registered trademarks of others.)

A reverse WHOIS search revealed that Respondent has at various times subsequent to Complainant’s use and registration of its trademark, registered, at least, <bostonprivatebank.co>, <bostonprivatebanking.net> and <bostonprivatebanks.com>. On information and belief, Respondent is still the owner of the domain names <bostonprivateequity.com> and <bostonprivateequityrealestate.com>.

Respondent was never affiliated and is not currently affiliated in any way with Complainant, yet has registered and continues to register domains featuring the BOSTON PRIVATE Marks alone or paired with finance-related descriptive or generic terms, such as “wealth,” “bank” and “equity”.

 

B. Respondent

In Response, Respondent states that it is a financial professional who owns a number of valuable domain names, including <privatewealthmanagement.co> and <privatewealthmanagement.com>. In an effort to protect the name space around these domains, Respondent registered over three dozen other domain names that contain the phrases “private wealth” or “private wealth management,” joined with a geographic or generic term. In its Complaint, Complainant omitted to mention that Respondent had registered a number of other “privatewealth” and “privatewealthmanagement” domain names.

 

In or around 2004, Respondent’s company  began a strategy of purchasing hundreds of generic or descriptive domain names describing the types of products and services that it sells and provides. In 2008 or 2009, Respondent began utilizing Google’s then-free “Keyword Tool” to determine what keywords in the financial industry were the most heavily searched on Google. Respondent’s basic formula for getting on the first page of search engines is having unique, in-depth content about a topic and displaying the content on an “exact match” domain name that it owns for the words or phrases it promotes—i.e., “private wealth management.”  As a result of his efforts in discovering a set of the most searched terms on Google in the financial planning and investment field – “private,” “wealth,” and “management” – on August 26, 2011, Complainant registered <PrivateWealthManagement.co>, which was previously unregistered. On that same date, Respondent started the process to acquire the more valuable <PrivateWealthManagement.com>, finally purchasing the same on September 16, 2011. In pursuance of this marketing policy of collecting generic and descriptive domain names for lead generation purposes, from 2004 until the present, Complainant located and registered approximately 700 generic or descriptive domain names.

 

Many of the domain names registered by Respondent contain “private wealth management,” “private bank,” “private banking,” or “401k,” coupled with a geographic or descriptive modifier and approximately two dozen of which contain the words “private wealth management” joined with a geographic or generic term. For instance, Respondent registered the domain names: <NewYorkPrivateWealthMangement.com>, <DubaiPrivateWealthManagement.com>, <HongKongPrivateWealthManagement.com>, <PrivateWealthManagementBoston.com>, <USPrivateWealthManagement.com>, <GlobalPrivateWealthManagement.com>, <BrazilPrivateWealthManagement.com>, <ChinaPrivateWealthManagement.com>, <IndiaPrivateWealthManagement.com>, <RussiaPrivateWealthManagement.com>, <SingaporePrivateWealthManagement.com>, and <WhatIsPrivateWealthManagement.com>.

Complainant’s company also owns <PrivateWealthAdvisor.org>, <PrivateWealthManagementAdvisor.com>, <PrivateWealthManagementAdvisors.com>, <PrivateWealthManagementCompanies.com>, <PivateWealthManagementFirms.com>, <PrivateWealthManagementNewYork.com>, and <PrivateWealthManagementServices.com>.

 

Each of the above domain names was registered between late 2011 and early 2012, in an effort to protect the name space around Respondent’s valuable <PrivateWealthManagement.[gTLD]> domain names.

Respondent’s company maintains live websites on approximately 130 of the nearly 700 domain names it registered during this campaign. Because its marquee generic domain names such as <SEPIRA.com>, <Individual401kcom>, <SimpleIRA.co>, <DefinedBenefitPlan.com>, and <PrivateWealthManagement.com> already rank highly in search engine results, and due to Google’s search engine algorithm that lowers websites rankings when content is duplicated across several similar websites, Respondent avoids republishing content on identical domains that include a geographic or descriptive modifier.  For instance, because Respondent’s corporation owns <PrivateWealthManagement.com>, if it published similar lead generation materials on <NewYorkPrivateWealthManagement.com>, both <PrivateWealthManagement.com> and <NewYorkPrivateWealthManagement.com> would drop in Google search results.

Thus, the decision not to republish content is a calculated search engine optimization strategy to maintain its high search engine rankings while it continues to generate leads for its investment advisory services.

Regarding the two disputed domain names, Respondent registered <bostonprivatewealthmanagement.com> on August 29, 2011 and <bostonprivatewealth.com> on September 1, 2011 – both after Respondent registered <PrivateWealthManagement.CO> and after Respondent had begun the process to acquire <PrivateWealthManagement.COM> – to appeal to potential clients and consumers of private wealth management services in the Boston, Massachusetts area, where his corporation has its headquarters.

Respondent submits that Complainant has laid claim to common, generic and descriptive words and phrases – “private wealth,” “private wealth management,” and “Boston” – which have significance outside of Complainant’s alleged field of rights. In particular, the phrases “private wealth” and “private wealth management” have specific meaning in Respondent’s commercial niche and are widely used. Complainant may not, under the Policy, prevent Respondent’s use of ordinary words in a domain name to host a website related to the very thing identified by those ordinary words. Moreover, Respondent had no knowledge of Complainant’s use of the alleged BOSTON PRIVATE WEALTH MANAGEMENT mark at the time that Respondent registered the disputed domain names.

Indeed, Complainant allowed that trademark registration to expire for non-use, and only recently sought to revive it in an application it has since amended to a different mark – BOSTON PRIVATE WEALTH.

 

The generic terms “wealth,” “management,” “bank,” and “banking” have usages similar to their descriptive meanings, when prefixed with the term “private,” they denote a special class of financial services tailored to high net worth individuals. “Wealth management” is simply the science of enhancing an individual’s financial situation, by utilizing an advisor or advisory team “to deliver a full range of financial services and products to an affluent client in a consultative way.

 “Private wealth management” is a term of art in the financial investment field that means delivering investment and wealth preservation advice to high-net-worth individuals i.e. investors with a net worth of more than $20 Million.

The disputed domain names <bostonprivatewealth.com> and <bostonprivatewealthmanagement.com> were registered by Respondent’s beneficial owner J. Eric Kuniholm (“Mr. Kuniholm”) in 2011, through his entity, Beacon Capital Management Advisors, Inc., which was founded in 2003, is based in Boston, Massachusetts, and provides objective financial advice and investment guidance to individuals, small business owners and U.S. corporations throughout the 50 States. Respondent’s company  advises individual investors with many facets of financial planning and private wealth management including saving for children’s education (529 plans) and funding their retirement plans, while having the flexibility to choose from stocks, bonds, institutional money managers and over 10,000 mutual funds.

Respondent’s main website, <bcmadvisors.com>, serves not only as a portal and informational guide for each of the services offered by the company, but also as a sales-lead generation tool.

Although Respondent had heard of Complainant at the time he registered the disputed domain names, he was not aware that Complainant was active in the wealth management field, and especially not in the “private wealth management” arena. Furthermore, Respondent had and has no knowledge of Complainant’s alleged use of the terms “Boston Private” separate and apart from “Bank & Trust Company.”

 

Respondent argues that Complainant has failed to establish that the disputed domain names are confusingly similar to Complainant’s asserted trademark. Complainant has not shown that it has trademark rights in the term “Boston Private Wealth Management” and that Respondent’s use of the Domain Names are identical or confusingly similar to it.

Complainant has failed to prove that it has trademark rights in the terms “Boston Private Wealth Management” or “Boston Private Wealth”.  The only registered trademark that Complaint maintains is for “Boston Private Bank & Trust Company.”

 

Complainant concedes that it did not file an intent-to-use application for a U.S. trademark for the term “Boston Private Wealth Management” until July 26, 2014 – nearly three years after Respondent registered the disputed domain names.

As of the date of the Response, no trademark rights have been granted to Complainant by the USPTO for a “Boston Private Wealth Management” trademark. While the Complainant claims that it “from time to time used” the slightly different mark “Boston Private Wealth Management Group,” since 2004, its prior registration with the USPTO for same was cancelled for failure to file a statement of use.

 

Accordingly, to satisfy the threshold trademark requirement under the UDRP, Complainant must establish that, prior to the registration of the disputed domain name, it had acquired through use of the term “Boston Private Wealth Management,” trademark rights at common law. Cream Holdings Limited v. National Internet Source, Inc., WIPO Case No. D2001-0964. As summarized in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), specific assertions of relevant use of the claimed trademark supported by relevant evidence of its “secondary meaning,” including in respect of the length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition, would be required. However, Complainant has failed to submit any evidence of common law trademark rights to the Panel. “If such evidence existed, it must have been within the knowledge of the Complainant, but it has not produced it before the Panel.” S.C. Altom Consulting S.R.L. v. Domain Administrator, PortMedia, WIPO Case No. D2012-1326 (Sept. 12, 2012).

In the present case, Complainant has provided no evidence of distinctiveness or protectable secondary meaning to support its claim for trademark rights to the generic term “Private Wealth Management” plus the geographic descriptor “Boston.” Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2006-1392 (Jan. 22, 2007). Accordingly, in view of “the fact that no market research or similar evidence has been submitted by Complainant to prove establishment on the market in the sense of the trademark law,” Respondent respectfully submits that the Panel cannot make a finding that common law trademark rights exist. Port of Helsinki vs. Paragon International Projects Ltd., WIPO Case No. D2001-0002 (Feb. 12, 2001).

 

Indeed, Complainant’s own USPTO application for an intent-to-use trademark registration for “Boston Private Wealth Management,” is telling of its lack of use before 2015. Moreover, the only specimen of use of submitted by Complainant for that mark is a website printout displaying the phrase “Boston Private Wealth,” dated February 17, 2015. There is no evidence of Complainant’s use of “Boston Private Wealth Management” either in this proceeding, or filed with the USPTO.

Respondent further submits that the disputed domain names are not confusingly similar to the disputed domain names. The term “Boston Private Wealth Management” is a generic term for private wealth management available in Boston. At best, it is a descriptive term lacking proof of acquired distinctiveness. The expression being descriptive, visitors to the websites to which the disputed domain names resolve will not wonder whether there is an association between the registrants of the disputed domain names and Complainant. Meat and Livestock Commission v. David Pearce aka OTC, WIPO Case No. D2003-0645 (Oct. 27, 2003) (“Given that the term “British meat” is the normal and natural term to describe meat produced in Britain, the Panel is not satisfied that the Domain Names would be regarded by Internet users as indicating a website of the Complainant.”).

 

Indeed, a Google search reveals that the term “Private Wealth Management” is used by a host of businesses throughout the United States and Internationally.

Respondent further asserts that Complainant’s registered trademark “Boston Private Bank & Trust Company” mark is not identical to the disputed domain names. A visual comparison of Complainant’s “Boston Private Bank & Trust Company” mark and the disputed domain names <bostonprivatewealth.com> and <bostonprivatewealthmanagement.com> reveals that the disputed domain names include the generic terms of art “private wealth” and “private wealth management” where Complainant’s “Boston Private Bank & Trust Company” mark does not.

 

Respondent concedes, however, that Complainant’s “Boston Private Bank & Trust Company” mark and the disputed domain names all include the geographic word “Boston” but argues that the inclusion of the geographical place name does not create a confusing similarity with Complainant’s “Boston Private Bank & Trust Company” mark.

 

Respondent asserts that it has rights and legitimate interests in the disputed domain name. Respondent submits that it had used the disputed domain names in connection with a bona fide offering of goods prior to any notice of Complainant’s claim is sufficient to establish Respondent’s legitimate interests in the disputed Domain Names. Policy ¶ 4(c)(i). The facts of the instant dispute demonstrate that Respondent did use the disputed domain names prior to learning of the dispute.

 

For years before receiving notice of the Complaint, Respondent had been using the <PrivateWealthManagement.com> domain name to market, promote, advertise and sell its “Private Wealth Management” products. Respondent used the disputed domain names, among scores of others, to protect the name space around its “PrivateWealthManagement” formative web sites. Respondent’s use of the disputed domain names to protect its name space was a strategic business decision, and its registration of those domains for that purpose was a legitimate business use. Thus, as the disputed domain names were registered as a part of a plan to protect the name space around the valuable <PrivateWealthManagement.com> website, consistent with his past business practices, such use was legitimate. See Midland National Life Insurance Company v. ItemWire / Edwin Sherman, FA 1472440 (Nat. Arb. Forum Jan. 11, 2013) (finding Respondent’s use of <midlandinsurance.com> was a legitimate bona fide offering of goods, where responded owned “over 200 insurance-related domain names that incorporate a geographic location [and] its registration of <midlandinsurance.com> appears consistent with past business practices,” notwithstanding the complainant’s MIDLAND NATIONAL and MIDLAND NATIONAL LIFE marks and offering of insurance services); Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that Respondent’s use of the disputed domain name to make a bona fide offering of services bestowed rights and legitimate interests in the domain name).

 

The information provided in the Annexes to the Complaint establish Respondent’s bona fide use of the disputed domain names prior to any notice of Complainant’s BOSTON PRIVATE BANK & TRUST COMPANY mark or claimed “Boston Private Wealth Management” mark.

 

Even if Respondent had been aware of Complainant’s claimed marks prior to September of 2011, such awareness does not equate to notice of the instant dispute. See D.C.C. Wine Exchange, Inc., v. Giumarra Farms Inc., FA 95065 (Nat. Arb. Forum Aug. 28, 2000) (before any notice means before a complainant notified the respondent of its position that use of the domain name infringed on its mark).

 

Respondent submits that the disputed domain names were neither registered nor used in bad faith. Because Respondent has made a bona fide use of the Disputed Domain Names, that fact, alone, defeats a finding of bad faith. See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent’s rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”). Even if it did not, Complainant has not provided evidence, or even recited any fact that would establish, that Respondent’s registration and use of the disputed domain names is abusive within the meaning of the Policy.

 

At the time that Respondent registered the disputed domain names, Respondent was unaware that Complainant was in the wealth management business, and had never heard of Complainant’s alleged “Boston Private Wealth Management” mark. This fact, alone, should be sufficient to defeat a claim of bad faith intent. As stated above, Respondent registered the disputed domain names – along with a number of other geo-targeted “private wealth management” formative domains – after Respondent registered <PrivateWealthManagement.co>, and had commenced negotiations to purchase <PrivateWealthManagement.com>. Respondent’s intent in doing so had nothing to do with Complainant – Respondent chose to register and protect the most heavily searched terms in connection with “private wealth management,” as reported by the Google Keyword Tool™.

 

Respondent’s registration of a number of other <CITYPrivateWealthManagement.com> domain names is compelling evidence that Respondent was not targeting Complainant’s mark at the time it registered the disputed domain names.

 

Nor has Respondent ever used the disputed domain names in bad faith. Respondent, who was unaware that Complainant even had a wealth management business, never used the disputed domain names to divert traffic to a competing site.

 

Similarly, Respondent never offered to sell the disputed domain names to Complainant for a profit. Complainant, nonetheless, contends that Respondent, in its February 6 email, attempted to sell the disputed domain names to Complainant. This is patently false. Nowhere in that letter does Respondent offer to sell the disputed domain names to Complainant. Instead, Respondent proposed a business solution around <PrivateWealthManagement.com> to promote and market their new private wealth management services. Respondent never offered to sell the disputed domain names to Complainant or any other party.

 

Complainant similarly contends that Respondent has a pattern and practice of registering infringing domain names, based on Respondent’s registration of <BostonPrivateBanking.net>, <BostonPrivateBank.co>, and <BostonPrivateBanks.com>. Again, Complainant’s assertion is misleading. As in the case of the disputed domain names, Respondent registered a number of “Private Bank” and “Private Banking” formative domain names in a number of geographic locations around the world, including <BrazilPrivateBank.com>, <BrazilPrivateBanking.com>, <ChinaPrivateBank.com>, <ChinaPrivateBanking.com>, <DubaiPrivateBanking.com>, <HongKongPrivateBank.com>, <HongKongPrivateBanking.com>, <IndiaPrivateBank.com>, <IndiaPrivateBanking.com>, <MoscowPrivateBank.com>, <MoscowPrivateBanking.com>, <PrivateBankingBoston.com>, <RussiaPrivateBank.com>, <RussiaPrivateBanking.com>, and <USPrivateBanking.com>.

Respondent’s intent in registering the highly descriptive <BostonPrivateBanking.net>, <BostonPrivateBank.co>, and <BostonPrivateBanks.com> domain names was, again, not to encroach on Complainant’s name space, but to carve out a name space in the private banking sector. Moreover, the phrases “Boston Private Banks” and “Boston Private Banking” are wholly descriptive and refer to private banks and private banking in Boston – Complainant cannot rightly lay claim to a monopoly on the use of these terms. For instance, one of Complainant’s competitors, Bank of America is the registrant of <BostonPrivateBanking.COM>, suggesting that consumers do not exclusively associate the phrase “Boston Private Banking” with Complainant alone.

 

Respondent’s registration of <BostonPrivateBank.co>, among some 700 highly descriptive banking and financial industry-related domain names, does not make him a cybersquatter. It especially does not lend weight to the argument that Respondent’s registration of the disputed domain names was in bad faith.

 

C. Additional Submissions – Complainant

In Additional Submissions, Complainant submits that Respondent fails to address that the disputed domain names begin with the words BOSTON PRIVATE, and it is that two-word combination, which Complainant has been using exclusively and continuously since 1986 and which Complainant is entitled to protect; argues that it is well established in UDRP precedent that a domain name which incorporates a trademark plus a generic term is still confusingly similar to that trademark – particularly where the generic terms in question relates to the trademark owner’s business, as in the present case; further argues that Respondent stretches credulity in claiming to have been aware of the existence of Complainant at the time the disputed domain names were registered, but to have had no knowledge that Complainant was engaged in the wealth management business. But this dubious claim is beside the point, as a federal registration constitutes constructive notice of the registrant’s rights in the mark (see 15 U.S.C. §1072) and Complainant held two federal registrations at the time these domains were registered, one of which featured the identical words BOSTON PRIVATE WEALTH MANAGEMENT.

 

D. Additional Submissions – Respondent

In Additional Submissions, Respondent argues that Complainant has failed to establish that it owns trademark rights in a mark that is confusingly similar with the disputed domain names. There is no dispute that Complainant owns a trademark registration for BOSTON PRIVATE BANK & TRUST COMPANY. That mark, however, is a far cry from the domain names at issue – <BostonPrivateWealthManagement.com> and <BostonPrivateWealth.com>.

 

Complainant’s claim to ownership of a BOSTON PRIVATE mark is also belied by the evidence and applicable law. Complainant has submitted no evidence of any use of BOSTON

PRIVATE as a mark. Nor may Complainant dissect its mark and claim that it owns a trademark in a part of the mark, as opposed to the whole. See, e.g., J. Thomas McCarthy, Trademarks and Unfair Competition Sec. 23.41 at 23-173 (4th ed.)(“A mark should not be dissected or split up into component parts. . .”); In re Bed & Breakfast Registry, 229 USPQ818 (Fed. Cir. 1986) (BED

AND BREAKFAST REGISTRY and BED AND BREAKFAST INTERNATIONAL not confusingly similar).

 

Complainant’s argument that the disputed domain names are confusingly similar to its claimed BOSTON PRIVATE WEALTH MANAGEMENT GROUP mark, which was abandoned for non-use, is of no avail on the issue of confusing similarity. Complainant cannot establish current trademark rights in a BOSTON PRIVATE WEALTH MANAGEMENT GROUP, on which to base a claim of confusing similarity.

 

Complainant’s claim of constructive notice has no bearing on the issue of confusing similarity. To the extent that Complainant’s argument is that Respondent acted in bad faith, due to the strict liability trademark concept of constructive notice, it has no place in a UDRP proceeding. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010); The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4.

 

FINDINGS

This Panel finds that Complainant is the owner of the above-listed registered trademark and trademark applications.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

Where a complainant does not prove one or more of the three elements required by the Policy, a panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s).  Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint.  See, e.g., Admerex Limited v. Metyor Inc., WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,… it is not necessary to make a finding under the second element of the Policy”);  Micro Electronics, Inc. v. MicroCenter, WIPO Case No. D2005 1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”).  Therefore, given that the Panel in the instant case finds, as discussed below, that Complainant has failed to prove the first element of the Policy – that is, paragraph 4(a)(i) – the Panel makes no findings with respect to the second and third elements of the Policy.

 

 

Identical and/or Confusingly Similar

 

By a majority, this Panel finds that the disputed domain names are neither identical nor confusingly similar to Complainant’s trademarks.

Complainant owns two registered trademarks via U.S. Trademark Registration No. 3,018,909, issued November 29, 2005, for the mark BOSTON PRIVATE BANK & TRUST COMPANY and Massachusetts Service Mark Registration No. 60847, issued November 7, 2011, for the mark BOSTON PRIVATE BANK & TRUST COMPANY.

 

While there may be circumstances where a state trademark registration is of certain value to a complainant for the purpose of the Policy, in the present case the Massachusetts trademark registration does not assist the Complainant.  South Fork Hardware, Inc., DBA TireChain.com v. Vulcan Sales, Inc., DBA Vulcan Tire Sales, WIPO Case No. D2013-0199.  (“Because state registrations are issued with no examination, a state registration does not give rise to the same presumptions of validity and ownership as does a federal registration.”)  Id.

 

There are similarities between the federal trademark registration and the disputed domain names <bostonprivatewealth.com> and <bostonprivatewealthmanagement.com>, but the similar elements of both are generic and descriptive of financial services provided in the Boston area. 

 

Complainant allowed its U.S. Registration No. 3,383,984, issued February 19, 2008, for the mark BOSTON PRIVATE WEALTH MANAGEMENT GROUP to lapse and filed U.S. Trademark Application No. 86/320,937 for the mark BOSTON PRIVATE WEALTH MANAGEMENT only on June 26, 2014.  As numerous decisions under the Policy have held, a trademark application is not evidence of any rights.  See, e.g., 24Poker AB v. Jim Bim, WIPO Case No. D2005-1097 (“[t]here is general agreement among panelists that a trademark application does not establish a trademark right within the meaning of paragraph 4(a)(i)”); and Koninklijke Nederlandse Springsstoffen Fabriek N.V. v. Kim Hyungho GMM., WIPO Case No. D2002-0707 (“[a] trademark application does not establish a trademark right”).

 

In the circumstances by a majority this Panel finds that Complainant has failed to establish the first element of the test in paragraph 4 of the Policy and the Complaint must fail.

 

Rights or Legitimate Interests

 As stated above, given that the Panel in the instant case finds that Complainant has failed to prove the first element of the Policy – that is, paragraph 4(a)(i) – the Panel makes no findings with respect to the second element of the Policy.

 

Registration and Use in Bad Faith

 As stated above, given that the Panel in the instant case finds that Complainant has failed to prove the first element of the Policy – that is, paragraph 4(a)(i) – the Panel makes no findings with respect to the third element of the Policy.

 

 

Dissent of G. Gervaise Davis

Panelist G. Gervaise Davis dissents from the majority view on a number of their factual findings and conclusions, and wishes to record that he would prefer to have entered judgment for the Complainant. He is of the view that while there are some weaknesses in its case, Complainant has at least minimally established facts and circumstances indicating that Respondent has acquired a group of domain names it is not using, for the purpose of preventing others from using them and possibly selling them at a profit, and one of these names is a clear conflict with Complaint’s business name.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <bostonprivatewealth.com> and <bostonprivatewealthmanagement.com> domain names REMAIN WITH RESPONDENT.  

 

______________________

James Bridgeman, Chair

Dated:  May 21, 2015

 

 

 

 

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